PTAB Must Consider All Claims AND All Grounds

by Dennis Crouch

AC Techs v., Inc. (Fed. Cir. 2019)

This case focuses on AIA-Trial Procedure following SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348 (2018).   In SAS, the Supreme Court held that the USPTO’s institution decision is binary — “either institute review or don’t.”  If the USPTO institutes an IPR then the PTAB must issue a final written decision regarding each claim challenged in the petition.  Prior to SAS, the USPTO commonly issued partial-institution orders — instituting the IPR on only a subset of challenged claims.

Here, Amazon’s petition was granted as to Grounds 1 and 2, but not Ground 3.  At institution stage, the Board found Ground 3 redundant — in part because the claims challenged by Ground 3 were already challenged by Ground 1.  Thus, we don’t have the same situation as SAS, but it is somewhat similar.  An important bit of information for the case is that Ground 3 did not present new prior art, but only an argument based upon an alternative claim construction.

In its final written decision, the Board invalidated a number of claims, but sided with the patentee for claims 2, 4, and 6 — the same claims challenged by not-instituted Ground 3.  On motion, the Board then issued a revised opinion considering Ground 3 and rejecting the remaining claims on that ground.

On appeal, the Federal Circuit confirmed that the Board had followed proper procedure — noting that “if the Board institutes an IPR, it must similarly address all grounds of unpatentability raised by the petitioner.” See BioDelivery Scis. Int’l, Inc. v. Aquestive Therapeutics, Inc., 898 F.3d 1205 (Fed. Cir. 2018) (“Post-SAS cases have held that it is appropriate to remand to the PTAB to consider non-instituted claims as well as non-instituted grounds.”).

The Federal Circuit also found no due process violation in the rehearing since the USPTO provided notice and allowed additional discovery and argument prior to considering Ground 3.

17 thoughts on “PTAB Must Consider All Claims AND All Grounds

  1. 4

    If the PTAB must actually consider every ground raised in the IPR petition even if one ground is clearly dispositive of all claims petitioned, that seems to be imposing a much greater and unreasonable burden on the PTAB than the courts have?

    1. 4.1

      Do you presuppose that the Article III courts have any type of tie along those lines to what Congress may dictate for the non-Article III court?

      You use the adjective “unreasonable.” Since this appears to be based purely on your feelings with no tie to the distinction that my question here provides, I would then ask that you remove that notion, or at the least, provide some better support for the feelings.

      Or do you simply not want to reflect that the petitioner has every control over what they supply in their petition in the first place?

  2. 3

    Scrolling by the headline of this thread , I am struck with the thought that there is a subtle irony in the courts dictating to the executive branch agency that the scope of the post grant review mechanism must be that as driven by the Petitioner (who controls the content of the petition).

    If patents were truly a mere “Public Franchise,” would not more discretion naturally inure to the Executive branch agency in THEIR review of that Public Franchise?

    Perhaps hanging onto some vestiges of Private personal property is inadvertent. Perhaps the notion that patents are NOT Private personal property (and thus, the challenge of such is a matter of private parties, even if conducted by either of the executive or judicial branches) will blossom again.

    Perhaps we (the Royal “we”) can continue to pretend that Oil States did not change the nature of the patent right.

    Or perhaps if we don’t pay attention, no one will notice the inherent problem (or necessary repercussions) OF the Oil States decision.

    1. 3.1

      Oops – second line third paragraph has an odd number of “negatives” and should have an even number.

    2. 3.2

      Oil States was a great decision. The right decision, for the right reasons.

      Stop s cking patent c ck 24-7.

      1. 3.2.1

        I’m sorry your last line broke up. What were you trying to say?

        (and is Malcolm thinks something is great is one of the surest signs that it is not (as well as, where – as here in reference to Oil States – patents are made weaker, Malcolm’s cognitive dissonance is on display as he supposedly works to obtain patent rights for his clients.


          he supposedly works to obtain patent rights for his clients.

          Indeed I do! Quite successfully, in fact.

          You seem unable or unwilling to process the fact that my clients also are concerned with the possibility that they might be infringing an invalid patent.

          Also, I don’t post here as an advocate for my clients. I comment here as a member of the public, albeit one with a far greater understanding of the issues than a typical citizen. And I wouldn’t feel so compelled to comment here were it not for a childish, whining subset of the patent bar who insist on propagating some of the most appallingly self-serving nonsense in the history of the profession.


            Your sense of what make an “invalid patent” would be (should be) MORE of a concern for your clients.

    3. 3.3

      If patents were truly a mere “Public Franchise,” would not more discretion naturally inure to the Executive branch agency in THEIR review of that Public Franchise?

      Seems like they have quite a bit of discretion at their disposal already. The current PTO Director is busy trying to illegally create special procedures that force Examiners to ignore the law and grant hundreds of thousands of ineligible logic patents.

      1. 3.3.2

        “logic patents”

        You are a truly biz arre f r e @ k if you think that the recitation of your vapid aphorisms isn’t anything but a longstanding j 0 ke.

        Oh wait, your “logic patent” does not even rise to the level of a vapid aphorism — it’s just simply vapid.

    4. 3.4

      PTAB is magic. It is a party to the grant of the public franchise whenever constitutionality is questioned. But it is a non-party it acts as a substitute for a real court.

      This way they get 100% of the power and 0% of the accountability.

      Fourth branch of government.

      1. 3.4.1

        The government IS the Franchisor.

        This is the basis for the Oil States decision.

        That basis necessarily has repercussions.

        I provided a number of posts hinting at, pointing out, and discussing several of these necessary repercussions in many of the threads leading up to the Oil States decision.

        It is beyond disingenuous (and evidences a lack of inte11ectual honesty) for certain posters (not including you, Josh) to pretend that Oil States is a “great decision. The right decision, for the right reasons” while simultaneously trying to NOT see those very repercussions as they unfold.

      2. 3.4.2

        It cannot be sustained. This week my company filed an Equal Access to Justice Application to recover attorney fees for the (former) Director’s erroneous decision to institute review of one of my patents. Watch the PTAB flip their position to say they are not the Franchisor reconsidering the decision to grant the patent. That would make the PTO a party to the proceedings and they would have to pay my fees under EAJA. That is unpleasant so they will morph into an adjudicator role, the exact role they denied fulfilling in Oil States. They are inconsistent, sometimes a franchisor, sometimes an independent tribunal, whatever is most convenient for the occassion.


          Interesting, but Don Quixote odds. The Equal Access to Justice statute reportedly has a threshold requirement of having a net worth not in excess of $7,000,000. – 28 U. S. C. §2412(d)(2)(B)). Plus a specific exclusion for two-party proceedings in which the government is not a party. The Director can institute reexaminations, rather than another party, but was your IPR? Is that even possible? [Even the IPR attempt by the Post Office is now being challenged.] By definition an IPR is an inter partes proceeding.

  3. 2

    The claim interpretation used by the PTAB in this IPR was apparently the newly PTO instituted In re Phillips claim interpretation [rather than BRI] for IPRs that so many folks thought was going to help patent owners. How did that help [rather than hurt] here?

  4. 1

    This may carry more “teeth” if estoppel (along the lines of what could have been argued) was more rigorously applied to those using the post grant mechanism (as choice of using that mechanism is entirely with the party asserting the matter).

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